Ex Parte Landschaft et al

Patent Trial and Appeal Board

Jul 29, 2014

11737877 (P.T.A.B. Jul. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ASSAF LANDSCHAFT and SHAJITH CHACO
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Appeal 2012-004262
Application 11/737,877
Technology Center 2100
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Before KEN B. BARRETT, CARL W. WHITEHEAD JR., and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1–10, 12–23, 25, and 26, all pending claims of the application.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 2, 2011), Appellants’ Reply Brief (“Reply Br.,” filed Jan. 16, 2012),
the Examiner’s Second Answer (“Ans.,” mailed Nov. 17, 2011), and the
original Specification (“Spec.,” filed Apr. 20, 2007).
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to a portable electronic device where
available software applications are ranked based on an associated location or
position. Spec. ¶ 1.
Claim 1, reproduced below, is illustrative:
1. A portable electronic device, comprising:
a position locator for determining an approximate
location of said device;
an application correlator for correlating said approximate
location with each of a plurality of applications resident on said
device;
a ranking generator for ranking said each of said plurality
of applications resident on said device relative to said
approximate location; and
a display for displaying said ranking on a user interface.

THE REJECTIONS
Claims 1–6, 8–10, 12–19, 21–23, 25, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Brandenberg (US 6,834,195 B2,
issued Dec. 21, 2004) and Roberts (US 7,068,291 B1, issued June 27, 2006).
Claims 7 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brandenberg, Roberts, and Ferguson (US 5,819,092, issued. Oct. 6,
1998).
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
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We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. App. Br. 5–12; Reply Br. 2–4. We
disagree with Appellants’ conclusions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 11–19). However, we highlight and
address specific arguments and findings for emphasis as follows.

REJECTION OVER BRANDENBERG AND ROBERTS
ISSUES
Appellants’ arguments present us with the following issues:
1. Has the Examiner erred because there is no motivation to combine
Brandenberg and Roberts?
2. Has the Examiner erred in finding the combination of Brandenberg
and Roberts teaches or reasonably suggests, “a ranking generator
for ranking said each of said plurality of applications resident on
said device relative to said approximate location” as recited in
claim 1?
3. Has the Examiner erred in finding the combination of Brandenberg
and Roberts teaches or reasonably suggests, “displaying said
ranking on a user interface” as recited in claim 14?

ANALYSIS
ISSUE 1
The Examiner’s rejection reasons there is motivation to combine
Brandenberg and Roberts “in order to improve program accessibility on
mobile devices.” Ans. 6. Appellants respond characterizing Brandenberg as
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“NOT concerned with ‘program accessibility’ but, rather, providing
contextually relevant digital content to a user’s mobile communication
device.” App. Br. 6. Appellants further contend:
One of ordinary skill in the art at the time of the invention
would NOT be motivated to combine the cited portions of
Roberts with the cited portions of Brandenburg [sic] because
Brandenburg [sic] is concerned with transmitting, or ‘pushing,’
contextually relevant material to a mobile device, NOT material
already resident on the mobile device.
Id. at 7. We are not persuaded the Examiner erred. As noted by the
Examiner (Id. at 13–14), it is not clear why Appellants find error in the
Examiner’s reasoning, but it appears Appellants argue Brandenberg and
Roberts are non-analogous art (e.g., in different fields of endeavor) and thus,
cannot be properly combined. Appellants’ assertions fall short of persuasive
argument or evidence that the references are non-analogous art. Rather, the
Examiner explains:
Moreover, both references are concerned with ranking content,
Brandenberg to rank available flash content by many factors,
including latitude and longitude, and Roberts to rank computer
applications by external input (in Roberts, the exemplary input
is user input). Thus, even though an overly narrow “field of
art” interpretation [(i.e., by Appellants’ interpretation)], the
references are analogous art due to sharing the same field of art.
Id. at 18. We agree. Further, as correctly noted by the Examiner (Id. at 14),
even if Brandenberg and Roberts are in different fields of endeavor:
When a work is available in one field, design incentives and
other market forces can prompt variations of it, either in the
same field or in another. If a person of ordinary skill in the art
can implement a predictable variation, and would see the
benefit of doing so, § 103 likely bars its patentability.
Moreover, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond that
person's skill. A court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Thus, even
assuming Brandenberg and Roberts are in different fields, the Examiner
contends, “Appellants have not articulated any reasoning why a person of
ordinary skill in the art could not apply the teachings of ranking resident
content on a device in Roberts as a predictable variation of ranking
externally drawn content in Brandenberg.” Id. at 14. We agree.
We, therefore, conclude the Examiner has met the burden of
articulating a reason for the proposed combination based on rational
underpinnings (to improve program accessibility). In view of the above
discussion, we are not persuaded the Examiner erred in rejecting claim 1.
Appellants present similar arguments regarding motivation to combine with
respect to claim 14 (App. Br. 10) and for essentially the same reasons we are
unpersuaded of error in the rejection of claim 14.

ISSUE 2
Appellants argue the Examiner erred because Brandenberg fails to
teach the recited ranking generator. App. Br. 5–6. Specifically, Appellants
contend the ranking generator of claim 1 ranks applications “available on the
device” relative to the location of the device while Brandenberg does not
teach ranking applications “already available on the device.” Id. at 6. We
are not persuaded the Examiner erred because the rejection relies on the
combination of Brandenberg and Roberts for disclosing the recited limitation
of a ranking generator. Thus, Appellants are improperly attacking the
references separately while the rejection is based on the combined teachings.
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Ans. 13; see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner relies on
Brandenberg for teaching ranking of applications (Id. at 6 citing various
portions of Brandenberg teaching determinations of “neediness”) and relies
on Roberts (in combination with Brandenberg) for ranking of content
already resident on a device (Id. citing Roberts col. 3, ll. 8–20). Thus, the
Examiner finds the combination of Brandenberg and Roberts teaches the
recited ranking generator.
In view of the above discussion, we are not persuaded the Examiner
erred in finding the combination of Brandenberg and Roberts teaches or
reasonably suggests, “a ranking generator for ranking said each of said
plurality of applications resident on said device relative to said approximate
location” as recited in claim 1. Appellants present similar arguments
regarding using the ranking generator with respect to claim 14 (App. Br. 7–
8) and for essentially the same reasons we are unpersuaded of error in the
rejection of claim 14.

ISSUE 3
Claim 14 is an independent method claim reciting features similar to
apparatus claim 1. The Examiner rejects claim 14 for essentially the same
reasons as claim 1 (Ans. 6–7) and thus finds the displaying step of claim 14
taught in Brandenberg column 94, lines 51–61 (Id. at 6) as the “‘digital
peripheral space’ which has contain [sic] low-priority items.” Id.
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Appellants argue Brandenberg does not teach displaying a ranking as recited
in claim 14. App. Br. 8–9. Specifically, Appellants contend “[t]he digital
peripheral space does NOT display any ranking of a plurality of
applications.” Id. at 9. Appellants further contend, “While these low
priority items may be displayed, there is no teaching of a ranking of a
plurality of applications is displayed, whether ordinal values are displayed or
not.” Id. “Even if low priority items are displayed, a ranking is NOT
displayed.” Id.
We are not persuaded the Examiner erred. Rather, we specifically
agree with the Examiner’s findings that:
It is explicitly noted in Brandenberg that “digital peripheral
vision” is concerned with reflection, in “the actual display” of
the applications as they sit in “virtual space”, and that items
which are not of immediate importance are relegated to the
periphery (Col 94 lines 54[–]61), and that it is further explained
below with reference of the graphical user interface (GUI) of
the present invention (Col 94 lines 65[–]67), and thus is clearly
concerned with ranking on a display since, after all, it would be
difficult to determine importance without some sort of ranking.
. . .
Brandenberg therefore shows, at least, a ranking generator that
ranks each of a plurality of flash content available (which was
firmly established on the record as encompassing applications)
to the device relative to said approximate location, and
displaying that ranking.
Ans. 17. We agree. Brandenberg teaches a determination of low-priority
(“items which are not of immediate importance”) versus other priority items
(non-low-priority e.g., higher priority of more immediate importance),
which clearly encompasses a “ranking” of those items based on priority and
further teaches displaying low-priority items differently on the display. See
Brandenberg 94:59–61: “Items that are accorded a low priority by a member
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or groups of members may be relegated to the digital peripheral space.”
Thus, low-priority items are relegated to one area (digital peripheral space)
while other items (higher priority) are not so relegated. We, therefore, find
Brandenberg teaches or reasonably suggests, “displaying said ranking on a
user interface” as recited in claim 14.
In view of the above discussion, we are not persuaded the Examiner
erred in finding the combination of Brandenberg and Roberts teaches or
reasonably suggests, “displaying said ranking on a user interface” as recited
in claim 14.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting independent claims 1 and 14 or dependent claims 2–6, 8–
10, 12, 13, 15–19, 21–23, 25, and 26 not argued separately with
particularity. App. Br. 11.

REJECTION OVER BRANDENBERG, ROBERTS, AND FERGUSON
Appellants argue the Examiner erred in rejecting claims 7 and 20 for
the same reasons as claims 1 and 14. App. Br. 12. Thus, for the same
reasons discussed supra, we are not persuaded the Examiner erred in
rejecting claims 7 and 20.

DECISION
For the above reasons, the Examiner’s decisions rejecting claims
rejections of claims 1–10, 12–23, 25, and 26 under 35 U.S.C. § 103(a) are
affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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