Ex Parte Lindsay et al

Patent Trial and Appeal Board

Sep 15, 2016

13405680 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,680 02/27/2012
95866 7590 09/19/2016
Fleit Gibbons Gutman Bongini & Bianco P,L,
551 NW 77th street
Suite 111
Boca Raton, FL 33487
FIRST NAMED INVENTOR
Donald James Lindsay
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.
9169-101386-US 8972
EXAMINER
STEPP JONES, SHAWNA T
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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 DONALD JAMES LINDSAY and
ERIK ARTUR GREISSON
Appeal2015-002964
Application 13/405,680
Technology Center 2600
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
MELISSA A. HAAPALA, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002964
Application 13/405,680
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Examiner's
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a method and apparatus pertaining to
depicting a plurality of contact addresses. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus comprising:
a wireless transceiver;
a touch-screen display;
a control circuit operably coupled to the touch-screen
display and the wireless transceiver and configured to:
- provide on the touch-screen display a list of contacts;
- in response to detecting a touch-based selection on the
touch-screen display of a particular contact within the list of
contacts, responsively depicting a plurality of contact addresses
as correspond to the particular contact such that a most frequently
utilized contact address of the plurality of contact addresses is
placed at a location on the touch-screen display that corresponds
to the touch-based selection of the particular contact.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wunsch US 6,606,381 Bl Aug. 12, 2003
1 Appellants indicate that Research In Motion Limited is the real party in
interest. (App. Br. 3).
2
Appeal2015-002964
Application 13/405,680
Hawkins et al.
("Hawkins")
Tsuei
US 7,231,229 Bl June 12, 2007
EP 2 112 809 A 1 Oct. 28, 2009
REJECTIONS
The Examiner made the following rejections:
Claims 1-5, 7, 9-11, 14, and 15 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Hawkins.
Claims 6 and 12 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hawkins in view of Wunch.
Claims 8 and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hawkins in view of Tsuei.
ANALYSIS
With respect to claims 1-15, Appellants set forth arguments with
respect to independent claims 1, 9, and 14 together. (App. Br. 9). We
address independent claim 1 as the illustrative claim. Independent claims 1,
9, and 14 contain similar claim limitations.
With respect to independent claim 1, Appellants contend:
[T]he plurality of contact addresses for a given contact are
displayed in response to detecting the touch-based selection on
the touch-screen display of that particular contact. Hawkins
instead teaches displaying the plurality of contact addresses in
response to detecting the assertion of the physical activation
switch. That physical activation switch is clearly different from
our touch-screen contact button.
(App. Br. 11 ). Appellants further contend that "it is insufficient that
Hawkins discloses a touch sensitive screen 102 in FIG. 1 because Hawkins
also teaches a very specific protocol by which that touch sensitive screen is
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Appeal2015-002964
Application 13/405,680
used in sequence with a physical activation switch 106 that is separate from
that touch sensitive screen." (App. Br. 12). Finally, Appellants argue:
Not only does Hawkins fail to teach such an approach, the
Examiner fails to explain why an ordinarily-skilled person would
have a reason to modify Hawkins to essentially eschew the use
of a physical activation switch. Instead, the Examiner simply
states that it would be obvious to make that activation switch a
feature of Hawkins' touch screen. The Examiner has not
addressed, however, the fact that Hawkins' physical activation
switch is an integral part of a physical 5-way button.
(App. Br. 13).
The Examiner identifies columns 7 and 8 of the Hawkins reference
and provides a conclusory paragraph concluding that "it would have been
obvious to one of ordinary skill in the art that the user can press an
activation button on the touch-screen display and yield the same output
as the invention." (Final Act. 4). Rather than address the merits of
Appellants' arguments, the Examiner states "Examiner respectfully
disagrees as the rejection is rejected under a 103 obvious type rejection in
view of one of ordinary skill in the art and broadest reasonable
interpretation." (Ans. 2). The Examiner repeats the same conclusion as in
the statement of the rejection. (Ans. 3). The Examiner further finds:
Furthermore, examiner is using broadest reasonable
interpretation to one of ordinary skill in the art that since
selection of buttons, icons, menus, or other inputs displayed on a
touch screen activates the input to perform an action similarly the
activation of an input displayed on a touchscreen occurring at
physical activation button it would be obvious that this same
activation could be performed on the touch screen and output the
same results.
(Ans. 3).
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Appeal2015-002964
Application 13/405,680
Appellants contend in the Reply Brief that the Examiner's proposed
modifications to the Hawkins reference would change the key principle of
operation espoused by the Hawkins reference. (Reply Br. 3). Appellants
further contend that the Examiner's analysis and reasoning is based upon
hindsight reasoning. (Reply Br. 4). We agree with Appellants that the
Examiner's analysis is based on hindsight reasoning and find the Examiner
has not provided a reasoned conclusion of obviousness based upon the cited
express teachings from the Hawkins reference. Moreover, we find the
Examiner's conclusion of obviousness is based upon speculation and
unfounded assumptions. We will not resort to speculation, unfounded
assumptions, or hindsight reconstruction to make up for the Examiner's
deficiency in factual findings and deficiency in the Examiner's line of
reasoning in the conclusion of obviousness stated in the rejection.
The Examiner has not identified how the additional prior art
references remedy the deficiency noted above with respect to the Hawkins
reference. As a result, we cannot sustain the rejections of dependent claims
6, 8, 12, and 13.
CONCLUSION
The Examiner erred in rejecting independent claims 1, 9, and 14 under
35 U.S.C. § 103(a) based upon the Hawkins reference alone.
DECISION
For the above reasons, the Examiner's rejections of claims 1-15 are
reversed.
REVERSED
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