Ex Parte Newman et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201613285714 (P.T.A.B. Feb. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/285,714 10/31/2011 10949 7590 02/23/2016 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 FIRST NAMED INVENTOR John-Rhys Newman 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. 042933/411949 9378 EXAMINER KELLS, ASHER ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 02/23/2016 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN-RHYS NEWMAN, PASCAL WEVER, MARCO PAGLIA, DUNCAN BURNS, JULIAN BLEECKER, and JACOB ZUKERMAN Appeal2014-003416 Application 13/285,7141 Technology Center 2100 Before ERIC S. FRAHM, LARRY J. HUME, and JEFFREY A. STEPHENS, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1 and 3-20. Appellants have previously canceled claim 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Nokia Corp. App. Br. 2. Appeal2014-003416 Application 13/285,714 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed invention "relates to the field of portable electronic device modes, associated methods, computer programs and apparatus," including Personal Digital Assistants (PDA) and tablet PCs. Spec. 1:5-10. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis and formatting added to contested limitation): 1. An apparatus comprising: at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to perform at least the follov,ring: provide a first mode of operation for a portable electronic device, the first mode configured to allow general unlocked user interaction with the user interface of the portable electronic device, the first mode associated with allowing for the availability of one or more of a first level of power consumption and processor activity for the portable electronic device; and provide a second mode of operation for the portable electronic device, the second mode 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed July 10, 2013) and the Amended Appeal Brief filed Aug. 22, 2013; Reply Brief ("Reply Br.," filed Jan. 16, 2014); Examiner's Answer ("Ans.," mailed Nov. 22, 2013); Final Office Action ("Final Act.," mailed Feb. 1, 2013); and the original Specification ("Spec.," filed Oct. 31, 2011 ). 2 Appeal2014-003416 Application 13/285,714 configured to allow locked user interaction with the user interface of the portable electronic device, the second mode associated with allowing for the availability of one or more of a second level of power consumption or processor activity for the portable electronic device, [L 1] wherein the locked user interaction of the second mode of operation allows for the user to provide a plurality of specific limited user inputs to the portable electronic device using the user interface of the portable electronic device, to directly interact with associated second mode output provided using the user interface in the second mode of operation, [L2] each of the plurality of specific limited user inputs [L2a] not being associated with general unlocking of portable electronic device to enter the first mode of operation, and [L2b] being associated with a corresponding task performable using the portable electronic device in the second mode of operation, each task having an associated risk criterion, and 1r'Vherein the complexity' of the specific limited user input corresponds to the risk criterion for the particular task. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Moore et al. ("Moore") US 2010/0123724 Al May 20, 2010 Sundaramurthy et al. US 2011/0047368 Al Feb. 24, 2011 (" Sundaramurthy") Hirose US 2011/0247067 Al Oct. 6, 2011 King US 2012/0226912 Al Sept. 6, 2012 3 Appeal2014-003416 Application I3/285,7I4 Rejections on Appeal RI. Claims I, 3-8, and I0-20 stand rejected under 35 U.S.C. § I03(a) as being obvious over the combination of Moore, King, and Hirose. Ans. 2. 3 R2. Claim 9 stands rejected under 35 U.S.C. § I03(a) as being obvious over the combination of Moore, King, Hirose, and Sundaramurthy. Ans. I3. CLAIM GROUPING Based on Appellants' arguments (App. Br. IO-I6), we decide the appeal of obviousness Rejection RI of claims I, 3-8, and I0-20 on the basis of representative claim I. We address remaining claim 9 in Rejection R2, not argued separately, infra. ISSUE Appellants argue (App. Br. IO-I6; Reply Br. I-5) the Examiner's rejection of claim I under 35 U.S.C. § I03(a) as being obvious over the 3 Although the Examiner does not state that claim 8 was rejected under Rejection RI in the explicit statement of the rejection (Final Act. 3; Ans. 2), the Examiner addresses the rejection of claim 8 in the detailed rejection. Final Act. 9; Ans. 8-9. We also note the Examiner states claim 9 was rejected under Rejection RI, but provides no detailed rejection under this rejection. Final Act. 3; Ans. 2. Claim 9 was addressed in Rejection R2. Ans. I 3 et seq. Appellants do not address either of these oversights, and we regard them as harmless error. Accordingly, we consider the first rejection RI to include claims I, 3-8, and I0-20, and the second rejection R2 to include only claim 9. 4 Appeal2014-003416 Application 13/285,714 combination of Moore, King, and Hirose is in error. These contentions present us with the following issues: (1) Did the Examiner err in finding the cited prior art combination teaches or suggests an apparatus that includes a processor and computer program code stored in a memory, wherein executed program code causes the apparatus to "provide a second mode of operation for [a] portable electronic device," and which carries out the functions in limitations [L 1] and [L2], including limitations [L2a] and [L2b], as recited in claim 1? (2) Did the Examiner err in finding the cited prior art combination teaches or suggests all the limitations of claim 1 by engaging in impermissible hindsight analysis? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claim 1, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 5 Appeal2014-003416 Application 13/285,714 Issue (1)- Claim 1 Limitations Allegedly not Taught or Suggested Appellants generally contend none of the cited prior art, either alone or in combination, teaches or suggests the contested limitations [LI], [L2], [L2a] and [L2b]. App. Br. 10---11. Appellants then separately argue the references. App. Br. 11-14. Because the Examiner rejects the claims as obvious over the references, the test for obviousness is not what each reference individually discloses, as Appellant argues, but rather what the combination of references would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, Appellants cannot show nonobviousness by attacking Moore, King, and Hirose for what they individually teach. The Examiner responds to Appellants' specific allegations in the Answer (Ans. 15-18), by pointing out the actual mapping of the contested limitations to the cited prior art combination, which are different than those argued by Appellants. In particular, the Examiner points out that Hirose was not relied upon for teaching or suggesting performing tasks in a second mode of operation, but instead, King paragraphs 63 and 64 are relied upon as teaching this limitation. Ans. 15-16. In addition, the Examiner finds Hirose paragraphs 29 through 37 teach or suggest performing tasks in a second mode of operation, i.e., a mode that allows locked user interaction with the user interface in a manner that allows a user to access a portion, but not all, applications available in the first general "unlocked" mode. Ans. 16-17. We adopt the Examiner's factual findings and legal conclusions of obviousness herein as our own. See Ans. 2-5 and 15-17. 6 Appeal2014-003416 Application 13/285,714 Issue (2)-Alleged Lack ofMotivation Due to use ofimproper Hindsight Appellants generally contend the Examiner erred because "the cited references may not be properly combined." App. Br. 14. Specifically, Appellants argue "it is only with the benefit of hindsight that the Examiner is combining these documents." Id. Appellants argue a person with skill in the art would not combine the teachings of Moore or King with Hirose because the security teachings of Hirose are allegedly incompatible with both Moore and King, purportedly for the reason that the functions of Hirose "relate to functions carried out in a different mode of operation to the mode in which the user input was provided whereas the functions of [Moore and King] relate to functions carried out in the same restricted mode of operation." Id. In addition, Appellants contend: [T]he teachings of [Hirose] are directed to restricting user access according to security of access considerations of respective users, rather than allowing better use of a second locked mode without entering the first mode. Applicant submits that this is a classic case of the Examiner combining different unrelated teachings with hindsight knowledge of the claimed invention. App. Br. 15. First, as explained in In re McLaughlin, we find: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). 7 Appeal2014-003416 Application 13/285,714 Second, the Examiner identifies the relevant portions of each of the references relied on throughout the Examiner's Answer. See Ans. 2-5 and 15-18. To the extent the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) ("[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 obviousness"). As our precedents make clear; however; the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'! Co, v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants contend there is no motivation to combine the references. App. Br. 14--16; Reply Br. 3--4.4 We disagree. The Supreme Court stated an explicit motivation to combine the references is seen as "helpful insight" (KSR, 550 U.S. at 418), but that the combination of familiar elements 4 Mere attorney arguments and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 8 Appeal2014-003416 Application 13/285,714 according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 416. Furthermore, Appellants have not demonstrated the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In this case, the Examiner's conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record. See Ans. 3-15. Therefore, we agree with the Examiner's factual findings and legal conclusions. Thus, we are not persuaded the Examiner's combination of ivioore, King, and Hirose was improper. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 3-8 and 10-20 which fall therewith. See Claim Grouping, supra. 9 Appeal2014-003416 Application 13/285,714 § 103(a) Rejection R2 of Claim 9 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claim 9 under§ 103 (see App. Br. 16), we sustain the Examiner's rejection of this claim. We deem arguments not made waived. Accordingly, we sustain the rejection of claim 9. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1-5) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections RI and R2 of claims 1 and 3-20 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1 and 3-20. 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 ACP 10 Appeal2014-003416 Application 13/285,714 11 Copy with citationCopy as parenthetical citation